Internet Trademark Case Summaries
Alitalia-Linee Aeree Italiane S.p.A. v. CASINOALITALIA.COM
128 F. Supp. 2d 340 (E.D. Va. 2001)
Plaintiff, Italy’s national airline, operated under the trademark ALITALIA. Defendant, a Dominican Republic entity, operated a gambling website at the domain name “casinoalitalia.com” at which visitors could play casino games online. Plaintiff’s suit included an ACPA claim against defendant based on personal jurisdiction over defendant and an ACPA claim against the “casinoalitalia.com” domain name based on in rem jurisdiction. Plaintiff moved for summary judgment on all counts of its complaint, and defendant entered a limited appearance for the purpose of challenging personal jurisdiction. In a case of first impression, the court held that “[b]ecause the ACPA’s in rem and in personam jurisdictional grants are mutually exclusive, [plaintiff] may not invoke and pursue both simultaneously.” In rem jurisdiction is available against a domain name only in those situations where personal jurisdiction is not available. Accordingly, the court examined whether it could exercise personal jurisdiction over defendant, in which case it would dismiss the in rem count and afford defendant an opportunity to appear and contest plaintiff’s summary-judgment motion, or if there was no personal jurisdiction over defendant, plaintiff would be entitled to summary judgment on its in rem claim if the record disclosed no triable issue of fact. The court found that Virginia’s long-arm statute reached defendant’s contacts with Virginia, and that such reach was constitutional. Noting that there was no Fourth Circuit authority addressing the exercise of personal jurisdiction in domain-name disputes, the court looked to decisions of other courts such as Zippo that have decided the issue based on the level of interactivity of the website and the commercial nature of the site. Applying that analysis, the court easily found that defendant’s contacts with Virginia constituted sufficient minimal contacts and purposeful availment to satisfy due-process requirements. First, the “casinoalitalia.com” website was highly interactive. Second, defendant entered into contracts with “casinoalitalia.com” members, who had to purchase “credits” to play individual games. Third, five of the 750 members of defendant’s website who played games at the site provided billing addresses in Virginia. Accordingly, because defendant was subject to personal jurisdiction in Virginia, plaintiff could not maintain its in rem action against the domain name. And plaintiff was not entitled to summary judgment on its ACPA claim based on personal jurisdiction, as defendant had to be afforded the opportunity to file a responsive of pleading and to eventually respond to plaintiff’s summary judgment motion should it be renewed.